A Double Patenting Rejection is a common issue faced by inventors who attempt to secure two or more patents for the same or similar invention. You may be wondering why someone would want multiple patents for the same invention—isn’t that redundant and a waste of money?
The Purpose and Problem of Obtaining Multiple Patents
Contrary to popular belief, obtaining multiple patents for an invention isn’t necessarily a waste of money. Here’s why.
Typically, patent attorneys strive to secure claim coverage for the same invention but in different ways and with varying scopes. This is achieved by filing multiple continuation applications containing different but similar claims. Every word in the claim carries weight during litigation. As a result, we aim to modify the wording in order to expand the scope of the claims or narrow it down to withstand any invalidity challenges.
However, this approach can sometimes lead to patents with different terms due to Patent Term Adjustments (PTA). A PTA extends the patent term to compensate for delays caused by the USPTO. Regardless, the US Patent Office views filing multiple applications with different claim scopes as an unauthorized attempt to extend the patent term. According to the law, patents expire 20 years from the filing of the first nonprovisional patent application.
Hence, the occurrence of a double patenting rejection.
Types of Double Patenting Rejections
There are two types of double patenting rejections:
- Statutory double patenting rejection
- Nonstatutory double patenting rejection
A statutory double patenting rejection occurs when an inventor seeks a patent for the same invention. For example, if a claim in a pending patent application is identical to a claim in a granted patent owned by the same inventor, the examiner will issue a statutory double patenting rejection.
On the other hand, a nonstatutory double patenting rejection, also known as an obviousness-type double patenting rejection, arises when an inventor tries to obtain a second patent with claims that are an obvious variation of a parent patent. Since the claimed inventions are not identical, the examiner will provide a nonstatutory double patenting rejection.
Overcoming Statutory and Nonstatutory Double Patenting Rejections
To overcome a nonstatutory double patenting rejection, you can file a Terminal Disclaimer. This disclaimer specifies that the patent term of any patent from the current application will expire at the same time as the conflicting parent patent.
However, a Terminal Disclaimer cannot be used for statutory double patenting rejections.
For statutory double patenting rejections, the process is similar. You need to modify the claims of the pending patent application to have slight differences in scope compared to the conflicting claims of the parent patent. By doing so, the claims become obvious variations of each other, thereby converting the statutory double patenting rejection into a nonstatutory one. You can then submit a Terminal Disclaimer to overcome the nonstatutory double patenting rejection.
In certain cases, you may argue that the claims are not obvious variations of each other. However, this is a more challenging approach that requires extensive argumentation. It is typically pursued when the product generates substantial revenue and the cost of pursuing the argument is negligible compared to the overall profitability.
In most instances, the strategy outlined above is implemented to overcome the rejection.
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